Case 1:19-cv-00187-RGA Document 10 Filed 04/26/19 Page 1 of 10 PageID #: 50
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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Guada Technologies LLC.,
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`Plaintiff/Counterclaim Defendant,
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`v.
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`UncommonGoods, L.L.C.,
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`Civil Action No.
`1:19-cv-00187-RGA
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`Jury Trial Demanded
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`Defendant/Counterclaim Plaintiff.
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`ANSWER, DEFENSES, AND COUNTERCLAIMS
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`Defendant UncommonGoods, L.L.C., (“Defendant”) provides its Answer, Defenses, and
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`Counterclaims in response to the Complaint of Plaintiff Guada Technologies LLC (“Plaintiff”).
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`I. THE PARTIES
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`1.
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`In answer to paragraph 1, Defendant lacks knowledge or information sufficient to
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`form a belief as to the truth of Plaintiff’s allegations in paragraph 1, and therefore denies them.
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`2.
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`3.
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`In answer to paragraph 2, Defendant admits the allegations therein.
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`II. JURISDICTION AND VENUE
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`In answer to paragraph 3, Defendant admits that this Court has subject matter
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`jurisdiction over this case.
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`4.
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`In answer to paragraph 4, Defendant states that it does not contest personal
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`jurisdiction in this case. Defendant otherwise denies the allegations in paragraph 4, and
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`specifically denies committing, or being liable for, any act of infringement, in any jurisdiction,
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`either directly or through any intermediaries.
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`5.
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`In answer to paragraph 5, Defendant states that it does not contest personal
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`jurisdiction in this case. Defendant otherwise denies the allegations in paragraph 5, and
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`specifically denies committing, or being liable for, any act of infringement, in any jurisdiction,
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`either directly or through any intermediaries.
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`6.
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`In answer to paragraph 6, Defendant admits that it is a Delaware limited liability
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`company and states that it does not contest venue in this case. Defendant otherwise denies the
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`allegations in paragraph 6, and specifically denies committing, or being liable for, any act of
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`infringement, in any jurisdiction, either directly or through any intermediaries.
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`7.
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`In answer to paragraph 7, Defendant states that it does not contest personal
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`jurisdiction and venue in this case. Defendant otherwise denies the allegations of paragraph 7.
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`III. COUNT 1: PATENT INFRINGEMENT OF U.S. PATENT NO. 7,231,379
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`8.
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`In answer to paragraph 8, Defendant incorporates its responses to paragraphs 1
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`through 7 as though fully set forth herein.
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`9.
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`In answer to paragraph 9, Defendant admits that, according to the face of U.S.
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`Patent No. 7,231,379 (“the ’379 Patent”), the ’379 Patent was issued by the U.S. Patent Office on
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`June 12, 2007, is entitled “Navigation in a Hierarchical Structured Transaction Processing
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`System,” and resulted from an application filed on November 19, 2002. Defendant admits that
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`Plaintiff purports to have attached a true and correct copy of the ’379 Patent as Exhibit A to the
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`Complaint.
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`10.
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`In answer to paragraph 10, Defendant lacks knowledge or information sufficient to
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`form a belief as to the truth of Plaintiff’s allegations in paragraph 10, and therefore denies them.
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`11.
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`In answer to paragraph 11, Defendants admits that the ’379 Patent purports to
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`address a problem of navigating network vertices in a programmed computer that has a
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`hierarchically configured decisional network that must be navigated as part of the processing, and
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`that is constructed to accept inputs or data. Defendant lacks knowledge or information to form a
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`2
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`belief as to the unclear statement that “Defendant argues that such a network exists outside of
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`computers” and therefore denies it. Defendant admits that the specification states, at column 2,
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`lines 25 to 30, that the “invention is implemented in a programmed computer that has a
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`hierarchically configured decisional network that must be navigated as part of the processing and
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`is constructed to accept inputs or data and process them in a manner that facilitates navigation of
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`the network vertices more efficiently.” Defendant lacks knowledge or information to form a
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`belief as to the remaining allegations in paragraph 11, and therefore denies them.
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`12.
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`In answer to paragraph 12, Defendants admit that column 2, lines 22-25 of the ’379
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`Patent refers to a “decisional network that must be navigated as part of the processing and is
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`constructed to accept inputs or data and process them in a manner that facilitates navigation of the
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`network vertices more efficiently.” Defendants admit that Figure 4 of the ’379 Patent purports to
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`illustrate an interactive television program listing. Defendant lacks knowledge or information
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`sufficient to form a belief as to the truth of the remainder of Plaintiff’s allegations in paragraph 12,
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`and therefore denies them.
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`13.
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`In answer to paragraph 13, Defendants admit that column 2, lines 9-18 of the ’379
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`Patent explains “the object in navigating the graph is to get from the first vertex to the goal
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`vertices,” and that “as the number of possible choices or nodes in the network become larger, the
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`number of possible pathways between the first vertex and the goal vertices multiples rapidly [and
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`t]herefore, the ability to reach the goal vertex can become more difficult, require navigation of an
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`excessive number of choices or nodes, or discourage a user before the goal vertex is even reached.”
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`Defendant lacks knowledge or information sufficient to form a belief as to the truth of the
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`remainder of Plaintiff’s allegations in paragraph 13, and therefore denies them.
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`14.
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`In answer to paragraph 14, Defendant denies the allegations therein.
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`3
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`15.
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`In answer to paragraph 15, Defendant lacks knowledge or information sufficient to
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`form a belief as to the truth of Plaintiff’s allegations in paragraph 15, and therefore denies them.
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`16.
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`In answer to paragraph 16, Defendant denies the allegations therein and specifically
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`denies committing, or being liable for, any act of infringement.
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`17.
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`In answer to paragraph 17, Defendant denies the allegations therein and specifically
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`denies committing, or being liable for, any act of infringement.
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`18.
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`In answer to paragraph 18, Defendant denies the allegations therein and specifically
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`denies committing, or being liable for, any act of infringement.
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`IV. DEMAND FOR JURY TRIAL
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`Plaintiff’s request for a jury trial includes no allegations and, therefore, no response is
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`required.
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`V. PRAYER FOR RELIEF
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`In answer to Plaintiff’s Prayer for Relief, Defendant denies that Plaintiff is entitled to any
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`of the relief requested in paragraphs a-e of its Prayer, or to any relief whatsoever from Defendant.
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`Defendant specifically denies committing, or being liable for, any act of infringement.
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`4
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`DEFENDANT’S DEFENSES
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`1.
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`Defendant has not infringed and does not infringe, contribute to the infringement
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`of, or induce others to infringe any valid and enforceable claim of the asserted patent-in-suit,
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`namely, U.S. Patent No. 7,231,379 (“the ’379 Patent”), either directly, indirectly, literally, or under
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`the doctrine of equivalents.
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`2.
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`The claims of the ’379 Patent are invalid and/or unenforceable for failure to comply
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`with one or more of the requirements of 35 U.S.C. §§ 101, 102, 103, or 112.
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`3.
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`By reason of statements, representations, concessions, admissions, arguments
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`and/or amendments, whether explicit or implicit, made by or on behalf of the applicant during the
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`prosecution of the patent application that led to the issuance of the ’379 Patent, Plaintiff’s claims
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`are barred, in whole or in part, under the doctrines of prosecution history estoppel and disavowal.
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`4.
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`Plaintiff’s claims are barred, in whole or in part, under 35 U.S.C. § 286, which
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`precludes recovery for any infringement committed more than six years prior to the filing of the
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`complaint.
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`5.
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`Plaintiff’s damages, to the extent there are any, are limited because it has not
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`satisfied the requirements of 35 U.S.C. § 287 or otherwise given proper notice of the ’379 Patent.
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`6.
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`Plaintiff is barred from recovering any costs in connection with this action under
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`35 U.S.C. § 288.
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`7.
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`To the extent that the infringement of claims asserted by Plaintiff require the actions
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`of third parties, Plaintiff is barred from recovery, in whole or in part, because Plaintiff is unable to
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`establish the direction or control necessary for a finding of joint infringement, nor show that
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`Defendant has conditioned such a third party’s participation in an activity or receipt of a benefit
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`5
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`upon performance of one or more steps of an asserted claim and established the timing of the
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`performance.
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`8.
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`Defendant’s investigation of its defenses is continuing, and Defendant expressly
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`reserves the right to allege and assert any additional affirmative defenses under Rule 8 of the
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`Federal Rules of Civil Procedure, the patent laws of the United States and any other defense, at
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`law or in equity, that may now exist or in the future be available based upon discovery and further
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`investigation in this case.
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`9.
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`Defendant incorporates herein the defenses propounded by any other defendant in
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`any prior or co-pending action involving the asserted patents.
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`DEFENDANT’S PRAYER FOR RELIEF AS TO COMPLAINT
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`WHEREFORE, Defendant prays for judgment and requests that this Court:
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`(a)
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`Dismiss with prejudice Plaintiff’s Complaint and enter a take nothing judgment
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`against Plaintiff and in favor of Defendant;
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`(b)
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`Enter judgment against Plaintiff and in favor of Defendant declaring the asserted
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`patent invalid, not infringed, and unenforceable;
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`(c)
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`Enter judgment in favor of Defendant against Plaintiff that this is an exceptional
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`case under 35 U.S.C. § 285, and that Defendant is entitled to recover its reasonable attorneys’
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`fees and costs;
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`(d)
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`Award Defendant its costs, expenses, interest, and attorneys’ fees to which it is
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`justly entitled; and
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`(e)
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`Grant such other and further relief as the Court may deem just and proper and to
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`which Defendant is entitled.
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`6
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`DEFENDANT’S COUNTERCLAIMS
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`1.
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`This is an action for declaratory judgment of non-infringement, invalidity and
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`unenforceability, as related to U.S. Patent Nos. 7,231,379 (“the ’379 patent”) pursuant to the
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`Declaratory Judgment Act, 28 U.S.C. §§ 2201-2202, and the United States Patent Law, 35 U.S.C.
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`§ 100 et seq., and for such other relief as the Court deems just and proper.
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`I. THE PARTIES
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`2.
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`Defendant/Counterclaim Plaintiff UncommonGoods, L.L.C. (“Defendant”) is a
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`Delaware limited liability company with its principal place of business at 140 58th Street, Building
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`B, Suite 5A Brooklyn, NY 11220. Defendant has a registered agent at Corporation Service
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`Company, 251 Little Falls Drive, Wilmington, DE 19808.
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`3.
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`On information and belief, Plaintiff/Counterclaim Defendant Guada Technologies
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`LLC is a Texas limited liability company with its principal place of business at 3000 Custer Rd.,
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`Ste. 270 - 7058, Plano, TX 75075.
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`II. JURISDICTION AND VENUE
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`4.
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`This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331, 1338,
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`2201, and 2202, and the Patent Laws of the United States, 35 U.S.C. § 1, et seq.
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`5.
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`Venue and personal jurisdiction is proper in this District because Plaintiff submitted
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`to venue and to personal jurisdiction in this District by filing its Complaint to which these
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`counterclaims relate.
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`III. COUNT 1: DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF U.S.
`PATENT NO. 7,231,379
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`6.
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`Defendant incorporates by reference each and every allegation contained in
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`paragraphs 1 through 5 of its Counterclaims as though fully set forth herein.
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`7
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`7.
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`Defendant seeks a declaratory judgment, pursuant to Federal Rule of Civil
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`Procedure 57 and 28 U.S.C. §§ 2201 and 2202, declaring the rights and interests of Defendants
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`and Plaintiff in connection with non-infringement of the ’379 patent. More particularly, Defendant
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`requests that this Court declare: that all claims of the ’379 patent are not infringed, literally or
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`under the doctrine of equivalents.
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`IV. COUNT 2: DECLARATORY JUDGMENT OF INVALIDITY OF U.S. PATENT NO.
`7,231,379
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`8.
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`Defendant incorporates by reference each and every allegation contained in
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`paragraphs 1 through 7 of its Counterclaims as though fully set forth herein.
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`9.
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`Defendant seeks a declaratory judgment, pursuant to Federal Rule of Civil
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`Procedure 57 and 28 U.S.C. §§ 2201 and 2202, declaring the rights and interests of Defendants
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`and Plaintiff in connection with the invalidity and unenforceability of the ’379 patent. More
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`particularly, Defendant requests that this Court declare that all claims of the ’379 patent are invalid
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`for failure to comply with one or more requirements of 35 U.S.C. §§ 101, 102, 103, or 112.
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`10.
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`Defendant further seeks a declaratory judgment that the claims of the ’379 patent
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`are invalid because they purport to patent an abstract idea, and are ineligible for patentability under
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`35 U.S.C. § 101.
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`11.
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`Defendant further seeks a declaratory judgment that the ’379 patent is invalid under
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`35 U.S.C. §§ 102 and/or 103 in light of the teachings of at least the following prior references:
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`U.S. Patent No. 6,731,724 to Wesemann et al.; U.S. Patent No. 6,366,910 to Rajarman et al.; and
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`U.S. Patent No. 7,539,656 to Fratkina et al.
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`V. DEMAND FOR JURY TRIAL
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`12.
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`Defendant demands a trial by jury of any issues so triable, including as allowed
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`under Rule 38 of the Federal Rules of Civil Procedure.
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`8
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`VI. PRAYER FOR RELIEF AS TO COUNTERCLAIMS
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`WHEREFORE, Defendant prays for judgment and requests that this Court:
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`(a)
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`(b)
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`(c)
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`Dismiss, with prejudice, Plaintiff’s claims against Defendant;
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`Deny all relief that Plaintiff seeks in its Complaint;
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`Enter judgment in favor of Defendant and against Plaintiff on Defendant’s
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`counterclaims;
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`(d)
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`Enter a declaratory judgment against Plaintiff and in favor of Defendant that the
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`claims of the asserted patent are invalid and unpatentable; and that Defendant has not infringed
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`any claim of the asserted patent;
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`(e)
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`Find this case to be exceptional under 35 U.S.C. § 285 and awarding Defendant
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`its costs, expenses, interest, and attorneys’ fees;
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`(f)
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`Grant such other and further relief as the Court may deem just and proper and to
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`which Defendant is entitled.
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`9
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`Case 1:19-cv-00187-RGA Document 10 Filed 04/26/19 Page 10 of 10 PageID #: 59
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`Dated: April 26, 2019
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`Respectfully submitted,
`MORGAN, LEWIS & BOCKIUS LLP
`/s/ Amy M. Dudash
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`Amy M. Dudash (# 5741)
`The Nemours Building
`1007 N. Orange Street, Suite 501
`Wilmington, DE 19801
`amy.dudash@morganlewis.com
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`ATTORNEY FOR DEFENDANT
`UNCOMMON GOODS, L..L.C.
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`10
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